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|\ United States R\tent and Trademark Office 



UNITED STATES DEPARTMENT OF COMMERCE 
United States Patent and Trademark Offices 

Address: COMMISSIONER OF PATENTS AND TRADEMARKS 
Washington, D.C. 20231 
www.uspto.gov 



APPLICATION NO. 



FILING DATE 



FIRST NAMED INVENTOR 



ATTORNEY DOCKET NO. CONFIRMATION NO. 



09/930,747 



08/14/2001 



Mohamed Megahed 



00CON159PC-CIP3 



2062 



25700 7590 09/26/2002 

FARJAMI & FARJAMI LLP 
16148 SAND CANYON 
IRVINE, CA 92618 



EXAMINER 



CRUZ, LOURDES C 



ART UNIT 



PAPER NUMBER 



2827 

DATE MAILED: 09/26/2002 



Please find below and/or attached an Office communication concerning this application or proceeding. 



PTO-90C (Rev. 07-01) 



Office Action Summary 



Application No. 

09/930,747 



Examiner 

Lourdes C. Cruz 



Applicant(s) 



MEGAHED ETAL 



Art Unit 

2827 



- The MAILING DATE of this communication appears on the cover sheet with the correspondence address 
Period for Reply 

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) FROM 
THE MAILING DATE OF THIS COMMUNICATION. 

- Extensions of time may be available under the provisions of 37 CFR 1 .136(a). In no event, however, may a reply be timely filed 
after SIX (6) MONTHS from the mailing date of this communication. 

- If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely. 

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication. 

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133). 

- Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any 
earned patent term adjustment. See 37 CFR 1 .704(b). 

Status 

Responsive to communication(s) filed on 27 June 2002 . 
2a)D This action is FINAL. 2b)S This action is non-final. 

3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is 

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 1 1 , 453 O.G. 213. 
Disposition of Claims 

4) E3 Claim(s) 1-20 is/are pending in the application. 

4a) Of the above claim(s) is/are withdrawn from consideration. 

5) D Claim(s) is/are allowed. 

6) 13 Claim(s) 1-20 is/are rejected. 

7) D Claim(s) is/are objected to. 

8) Q Claim(s) are subject to restriction and/or election requirement. 

Application Papers 

9) D The specification is objected to by the Examiner. 

10) D The drawing(s) filed on is/are: a)D accepted or b)D objected to by the Examiner. 

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a). 

11) D The proposed drawing correction filed on is: a)D approved b)D disapproved by the Examiner. 

If approved, corrected drawings are required in reply to this Office action. 

12) Q The oath or declaration is objected to by the Examiner. 
Priority under 35 U.S.C. §§119 and 120 

13) D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 19(a)-(d) or (f). 

a>n All b)D Some*c)D None of: 

1 .□ Certified copies of the priority documents have been received. 

2. Q Certified copies of the priority documents have been received in Application No. . 

3. Q Copies of the certified copies of the priority documents have been received in this National Stage 

application from the International Bureau (PCT Rule 17.2(a)). 
* See the attached detailed Office action for a list of the certified copies not received. 

14) Q Acknowledgment is made of a claim for domestic priority under 35 U.S.C. § 1 19(e) (to a provisional application). 

a) □ The translation of the foreign language provisional application has been received. 

15) ^ Acknowledgment is made of a claim for domestic priority under 35 U.S.C. §§ 120 and/or 121. 
Attachment(s) 

1 ) M Notice of References Cited (PTO-892) 4) □ Interview Summary (PTO-41 3) Paper No(s). . 

2) CD Notice of Draftsperson's Patent Drawing Review (PTO-948) 5) d Notice of Informal Patent Application (PTO-152) 

3) Information Disclosure Statement(s) (PTO-1449) Paper No(s) 3 1/2 . 6) □ Other: 



U.S. Patent and Trademark Office 
PTO-326 (Rev. 04-01) 



Office Action Summary 



Part of Paper No. 7 





J. 



Application/Control Number: 09/930,747 
Art Unit: 2827 



Page 2 



DETAILED ACTION 



Claim Rejections - 35 USC § 102 



The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that 
form the basis for the rejections under this section made in this Office action: 

A person shall be entitled to a patent unless - 

(b) the invention was patented or described in a printed publication in this or a foreign country or in public 
use or on sale in this country, more than one year prior to the date of application for patent in the United 



Claims 1,2,5-14,17-20 are rejected under 35 U.S.C. 102(b) as being anticipated 
by Selna (US 5640048). 

Selna discloses (See cover fig.) a structure comprising: a substrate 52,54 having 
a top surface for receiving a die 12; a conductor (8B, left) being adapted for connection 
to a first substrate signal bond pad (10B, bottom left) and a second terminal (8A, left) of 
said conductor being adapted for connection to a first die signal bond pad (not labeled 
but inherently present); a printed circuit board 18 attached to a bottom surface of said 
substrate; at least one via (6B, right) in said substrate; said at least one via providing 
electrical connection between a second die signal bond pad and said printed circuit 
board. 

Selna also discloses a structure wherein: 



• Said die is a semiconductor die 

• Said at least one via provides an electrical connection between a 
second substrate signal bond pad (8b, right) and said printed circuit 
board, wherein said second substrate signal bond pad is electrically 
connected to said second die signal bond pad 



States. 



Application/Control Number: 09/930,747 Page 3 

' Art Unit: 2827 

• Said second substrate signal bond pad is electrically connected to 
said second die signal bond pad by a bonding wire 24 

• Said at least one via provides an electrical connection between said 
second die signal bond pad and a land (10B, right), said land being 
electrically connected to said PCB (through 14B) 

• Said at least one via provides an electrical connection between a 
second substrate signal bond pad (8B, right) and a land (10B, 
right), wherein said second substrate signal bond pad is electrically 
connected to said second die signal bond pad, and wherein said 
land is electrically connected to said printed circuit board (Through 
14B) 

• Said second via comprises a thermally conductive material 

• Said conductor is an inductor for having inductance associated with 
it 

• See that said conductor (as indicated above) has a first terminal 
(point of connection) connected to said first substrate signal bond 
pad and said second terminal (point of connection between 
conductor and die) connected to said first die signal bond pad 

• See that the conductor comprises a plurality (see plurality of vias 
shown) of via metal segments within said substrate 





Application/Control Number: 09/930,747 
Art Unit: 2827 



Page 4 



Claim Rejections - 35 USC § 103 



The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all 
obviousness rejections set forth in this Office action: 

(a) A patent may not be obtained though the invention is not identically disclosed or described as set 
forth in section 1 02 of this title, if the differences between the subject matter sought to be patented and 
the prior art are such that the subject matter as a whole would have been obvious at the time the 
invention was made to a person having ordinary skill in the art to which said subject matter pertains. 
Patentability shall not be negatived by the manner in which the invention was made. 

Claims 3-4,15-16 are rejected under 35 U.S.C. 103(a) as being unpatentable 
over Selna. 

See that Selna discloses all the structural limitations discussed above. However, 
Selna does not specifically describe substrate 18 being comprised of an 
organic/ceramic material. Failure of Selna to specifically disclose the material of which 
the disclosed substrate/PCB is made of is considered to suggest the use of materials 
known to be feasible for use for the claimed structure among semiconductor artisans. 
Ceramic/organic materials are among those feasible materials that are well known and 
widely used in the art. Therefore, it would have been obvious to one of ordinary skill in 
the art at the time the invention was made to incorporate the well known PCB 
comprising well known and widely used organic/ceramic material for these are known 
among semiconductor artisans and Selna suggests their use. Also, see that the 
specification and description of the invention is not focused on these materials and that 
ceramic/organic materials in PCBs are not the claimed invention. 



Double Patenting 



Application/Control Number: 09/930,747 
Art Unit: 2827 



Page 5 



The nonstatutory double patenting rejection is based on a judicially created 
doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the 
unjustified or improper timewise extension of the "right to exclude" granted by a patent 
and to prevent possible harassment by multiple assignees. See In re Goodman 1 1 
F.3d 1 046, 29 USPQ2d 201 0 (Fed. Cir. 1 993); In re Longi, 759 F.2d 887, 225 ' 
USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 
1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970);and, In re Thorington 
418 F.2d 528, 163 USPQ 644 (CCPA 1969). ' 

A timely filed terminal disclaimer in compliance with 37 CFR 1 .321(c) may be 
used to overcome an actual or provisional rejection based on a nonstatutory double 
patenting ground provided the conflicting application or patent is shown to be commonly 
owned with this application. See 37 CFR 1 . 1 30(b). 

Effective January 1 , 1 994, a registered attorney or agent of record may sign a 
terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 
37 CFR 3.73(b). 

Claims 1-20 are provisionally rejected under the judicially created doctrine of 
obviousness-type double patenting as being unpatentable over claims 18-33 and 58-66 
of copending Application No. 09/713834 in view of Selna (US 5640048). 

The above is a provisional obviousness-type double patenting rejection. 



Claims 1-20 are rejected under the judicially created doctrine of obviousness- 
type double patenting as being unpatentable over claims 1-17 of U.S. Patent No. US 
6191477 in view of Selna (US 5640048). 

The above Application and Patent fail to specifically disclose a conductor 
patterned on the top surface of the substrate, it being adapted for connection to a first 
substrate to the structures. Nonetheless: 

It would be obvious to incorporate a conductor patterned on 
the top surface of the substrate (as taught by Selna); it being adapted for 
connection to a first substrate, to the structures in 09/713834 and in US 





Application/Control Number: 09/930,747 
Art Unit: 2827 



Page 6 



6191477, since it would have been obvious to one of ordinary skill in the 
art at the time the invention was made that a conductive patterned in the 
surface of the substrate is necessary (also known and commonly used for 
connection between die and substrate). Additionally, substrates inherently 
have conductive traces patterned within and on them to enable 
connection. 



Any inquiry concerning this communication or earlier communications from the 
examiner should be directed to Lourdes C. Cruz whose telephone number is 703-306- 
5691. The examiner can normally be reached on M-F 10-6:30. 

If attempts to reach the examiner by telephone are unsuccessful, the examiner's 
supervisor, David L Talbott can be reached on 703-305-9883. The fax phone numbers 
for the organization where this application or proceeding is assigned are 703-308-7722 
for regular communications and 703-308-7722 for After Final communications. 

Any inquiry of a general nature or relating to the status of this application or 
proceeding should be directed to the receptionist whose telephone number is 703-308- 



0956. 




Lourdes C. Cruz 
Examiner 
Art Unit 2827 



Lourdes Cruz 
September 24, 2002 




JEI 
PR*